DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1-2 and 8 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Akiyama et al (WO 2019111352) (US 20200297032 used as translation).
Regarding claim 1, Akiyama discloses a method of fabricating a thin film heater comprising: etching a metal sheet from two opposing sides to provide a planar heating element ([0025] “FIG. 5 is a view conceptually explaining a process in which a metal substrate dissolves gradually during double-sided etching.”);
and attaching the planar heating element to a flexible electrically insulating backing film ([0029] “FIG. 9A is a view illustrating by example an installation mode of a heating unit on a liquid holding member of an atomizing unit according to a variation of the first embodiment.”).
Regarding claim 2, Akiyama teaches the method as appears above (see the rejection of claim 1), and Akiyama teaches wherein the etching step comprises photoetching the metal sheet ([0050] lines 4-7 ---“:Here, as an example of producing the metal heater 152, description will be given by citing an example in which the metal heater 152 is made by applying photo-etch processing to the metal substrate BM1.”).
Regarding claim 8, Akiyama teaches the method as appears above (see the rejection of claim 1), and Akiyama teaches wherein the etching step comprises etching the metal sheet to form the planar heating element comprising: a heater track (Fig. 2B #1521 linear heating unit) which follows a circuitous path covering a heating area within a plane of the planar heating element (Fig. 2B #152 metal heater);
and two extended contact legs (Fig. 2B #s 1522a-1522b electrode units) for connection to a power source.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim(s) 3 is/are rejected under 35 U.S.C. 103 as being unpatentable over Akiyama et al (WO 2019111352) as applied to claim 1, in view of Hierholzer, Jr. et al (US 3,846,726).
Regarding claim 3, Akiyama teaches the method as appears above (see the rejection of claim 1), but does not teach wherein the planar heating element is attached to a surface of the flexible electrically insulating backing film using an adhesive.
Nonetheless, Hierholzer, Jr. in the same field of endeavor being thin film heating devices teaches wherein the planar heating element is attached to a surface of the flexible electrically insulating backing film using an adhesive (Col. 3 lines 4-9 ---" The thin flexible metallic resistance element 42 may be constructed of copper, stainless steel, nichrome, or any other metal suitable for the purpose, and bonded to the film 40 by any suitable means as with a high temperature adhesive such as nitrile rubber.”).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have the planar heating element being attached to a surface of the flexible electrically insulating backing film using an adhesive, since it has been held by the courts that selection of a prior art material on the basis of its suitability for its intended purpose is within the level of ordinary skill. In re Leshing, 125 USPQ 416 (CCPA 1960) and Sinclair & Carroll Co. v. Interchemical Corp., 65 USPQ 297 (1945).
Claim(s) 4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Akiyama et al (WO 2019111352) as applied to claim 1, in view of Reinicke et al (US 6,141,497).
Regarding claim 4, Akiyama teaches the method as appears above (see the rejection of claim 1), but does not teach wherein the etching step comprises etching the metal sheet to provide two or more connected heating elements.
Nonetheless, Reinicke in the same field of endeavor being electric heating devices teaches wherein the etching step comprises etching the metal sheet to provide two or more connected heating elements (Col. 3 lines 21-25 ---" Thus, a standard wafer of 3-inch diameter and 0.015-inch thickness can serve for the simultaneous photo-etched reproduction of an array of 37 duplicate silicon-lamination area elements (0.375.times.0.375 inches square).”).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the method of Akiyama by incorporating the etching step as taught by Reinicke for the purpose of fabricating multiple heating elements at the same time.
Regarding claim 5, Akiyama in view of Reinicke teaches the method as appears above (see the rejection of claim 4), and Reinicke teaches wherein the etching step comprises etching the metal sheet to provide two or more connected heating elements supported within a support frame (Col. 5 lines 59-67 ---" In FIG. 9, the double-line definition of 37 complete duplicate square configurations will be understood to suggest allowance for diamond saw or other cutting of individual square elements (e.g., 0.375 inch by 0.375 inch) from the entire wafer. The glass lamination is shown to be a 3.0.times.3.0 inch square panel which will be understood to have been bonded to all grooved surfaces throughout the wafer 35, prior to severance into single elements or multiple-element arrays.”).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the method of Akiyama in view of Reinicke by incorporating the etching step as taught by Reinicke for the purpose of fabricating multiple heating elements at the same time.
Regarding claim 6, Akiyama in view of Reinicke teaches the method as appears above (see the rejection of claim 4), and Akiyama in view of Reinicke teaches further comprising: detaching each of the two or more connected heating elements and attaching each of the two or more connected heating elements to a corresponding piece of the flexible electrically insulating backing film (This step can be performed by hand since the previous steps of etching and removing the heating elements have been performed as well as having the backing film where the heating elements are to be placed).
Claim(s) 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Akiyama et al (WO 2019111352) as applied to claim 8.
Regarding claim 9, Akiyama teaches the method as appears above (see the rejection of claim 8), but does not teach wherein a length of the two extended contact legs is substantially equal to or greater than dimensions of the heating area.
However, it would have been obvious to one of ordinary skill in the art at the time the invention was made to have a length of the two extended contact legs being substantially equal to or greater than dimensions of the heating area, since it has been held by the courts that, where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device, and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device. In Gardner v. TEC Systems, Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984),
Claim(s) 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Akiyama et al (WO 2019111352) as applied to claim 8, in view of Wu et al (US 2019/0124985).
Regarding claim 10, Akiyama teaches the method as appears above (see the rejection of claim 8), but does not teach further comprising: attaching a second flexible film layer so as to enclose the heater track between the flexible electrically insulating backing film and the second flexible film layer.
Nonetheless, Wu in the same field of endeavor being electric heating devices teaches attaching a second flexible film layer (Fig. 7 #40 insulating layer) so as to enclose the heater track between the flexible electrically insulating backing film and the second flexible film layer.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the method of Akiyama by incorporating the second film layer as taught by Wu for the purpose of electrically isolating the heating element.
Claim(s) 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Akiyama et al (WO 2019111352) in view of Wu et al (US 2019/0124985) as applied to claim 10, further in view of Lyubomirskiy et al (US 2015/0181936).
Regarding claim 11, Akiyama in view of Wu teaches the method as appears above (see the rejection of claim 10), but does not teach further wherein the second flexible film layer comprises a heat shrink material.
Nonetheless, Lyubomirskiy in the same field of endeavor being electric heating devices teaches wherein the second flexible film layer comprises a heat shrink material (Fig. 5B #18 heat-shrink tubing).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the method of Akiyama in view of Wu by incorporating the heat shrink material as taught by Lyubomirskiy for the purpose of constricting the heating element.
Claim(s) 12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Akiyama et al (WO 2019111352) as applied to claim 1, in view of Duru et al (US 2011/0097133).
Regarding claim 12, Akiyama teaches the method as appears above (see the rejection of claim 1), but does not teach wherein the flexible electrically insulating backing film comprises polyimide.
Nonetheless, Duru in the same field of endeavor being electric heating devices teaches wherein the flexible electrically insulating backing film comprises polyimide ([0079] ---" As may be seen in FIG. 3, the heater member 10 comprises a substrate 12, e.g., made of polyimide, that presents a thickness lying in the range 15 .mu.m to 30 .mu.m, for example, in particular 25 .mu.m.”).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the method of Akiyama by incorporating the polyimide backing film as taught by Duru for the purpose of protecting the heating element.
Regarding claim 14, Akiyama teaches the method as appears above (see the rejection of claim 1), but does not teach wherein the flexible electrically insulating backing film has a thickness of less than 50 µm.
Nonetheless, Duru teaches wherein the flexible electrically insulating backing film has a thickness of less than 50 µm ([0079] ---" As may be seen in FIG. 3, the heater member 10 comprises a substrate 12, e.g., made of polyimide, that presents a thickness lying in the range 15 .mu.m to 30 .mu.m, for example, in particular 25 .mu.m.”).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the method of Akiyama by incorporating the polyimide backing film as taught by Duru for the purpose of protecting the heating element.
Claim(s) 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Akiyama et al (WO 2019111352) as applied to claim 1, in view of Petit et al (US 6,054,690).
Regarding claim 13, Akiyama teaches the method as appears above (see the rejection of claim 1), but does not teach wherein the flexible electrically insulating backing film comprises PTFE.
Nonetheless, Petit in the same field of endeavor being electric heating devices teaches wherein the flexible electrically insulating backing film comprises PTFE (Col. 2 lines 7-12 ---" The thermoplastic or thermosetting material is, in particular, selected from polytetrafluoroethylene (PTFE), perfluoroalkoxyalkane (PEA), MFA, perfluoro-(ethylene-propylene) (FEP), ethylene-tetrafluoroethylene (PTFE), polyvinylidene fluoride (PVDF), polyethyleneterephthalate (PET) and polyimide (KAPTON).”).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the method of Akiyama by incorporating the electrically insulating backing film as taught by Petit for the purpose of electrically insulating the heating element.
Allowable Subject Matter
Claim 7 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Response to Arguments
A second Non-Final Office Action is being issued because of the change in Examiner’s interpretation of claim 3, which was previously considered in the Non-Final Office Action mailed on 06/27/2025
Applicant's arguments filed 09/29/2025 have been fully considered but they are not persuasive.
For claim 1:
Applicant argues that Akiyama does not teach a flexible electrically insulating backing film. Examiner respectfully disagrees.
Akiyama teaches a wick member made of glass fiber or the like, or may be porous foam, cotton, or the like. Glass fibers are electrically isolating and flexible.
For claims 12 and 13:
In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
For claim 3:
Applicant’s arguments, see pages 3-4, filed 09/29/25, with respect to the rejection(s) of claim(s) 3 under 35 U.S.C 102(a)(1) have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Hierholzer, Jr. et al (US 3,846,726).
Akiyama does not teach the planar heating element being attached to a surface of the flexible electrically insulating backing film using an adhesive.
However, Hierholzer, Jr. does teach the planar heating element being attached to a surface of the flexible electrically insulating backing film using an adhesive. See the rejection of claim 3 above.
For claim 8:
Applicant argues that Akiyama does not teach a circuitous path. Examiner respectfully disagrees.
Fig. 2B shows electrodes attached to the heating unit. This configuration forms a circuit when attached to a power source.
For claim 10:
Applicant argues that Wu does not teach a second flexible backing film as claimed. Examiner respectfully disagrees.
Wu teaches a second flexible backing film. The combination of Akiyama and Wu teaches the second backing film enclosing the heating element between the two backing films.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOE E MILLS JR. whose telephone number is (571)272-8449. The examiner can normally be reached M-F 8-5.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Ibrahime Abraham can be reached at (571) 270-5569. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JOE E MILLS JR./Examiner, Art Unit 3761
/IBRAHIME A ABRAHAM/Supervisory Patent Examiner, Art Unit 3761